Apple has until July 24 to modify its trademark application and resubmit.

Apple's application for the "iPad mini" trademark must be more descriptive if the US Patent and Trademark Office is going to approve it. A document from the USPTO surfaced online over the weekend, indicating that the office was unlikely to give Apple the trademark based on its initial description. Although some have interpreted the letter as an outright rejection, the USPTO's response offers Apple options for modifying its application—as long as it offers a disclaimer on "mini."

The USPTO's letter to Apple is dated January 24 but was only just made public. In it, the organization notes that while "iPad" is descriptive when applied to Apple's goods—the "i" because it's understood by the public to refer to the Internet, while "pad" is connected with tablet computers. "Mini," on the other hand, is the word that the USPTO takes issue with. Because "mini" is usually applied to something that's just smaller than usual, the USPTO considers the word "merely descriptive" and doesn't want to award Apple exclusive use as part of the trademark.

Because of the problem with "mini," the USPTO is hesitant to move forward since the trademark could easily be confused with Apple's other, existing trademark for "iPad." That said, Apple now has the option to amend its application to include a disclaimer on the word "mini" and to explain why it needs a separate trademark for "iPad mini" in addition to "iPad." Apple was given a six month deadline from the original letter to submit a modified application, meaning it now has until July 24 to rework it and resubmit.

Jacqui Cheng
Jacqui is an Editor at Large at Ars Technica, where she has spent the last eight years writing about Apple culture, gadgets, social networking, privacy, and more. Emailjacqui@arstechnica.com//Twitter@eJacqui

So "iPad mini" is somehow less specific than the already trademarked term "iPad" despite it referring to an obviously distinct model of the iPad?

What's annoying here is that it's clear Apple isn't trying to trademark the word "mini" as distinct from "iPad mini."

I swear, sometimes I just want to start strangling people. Any volunteers? *Holds out stranglepaws*

What the USPTO is saying is that since Apple already has the trademark on "iPad", there is no need for them to trademark "iPad mini", because if a company tried to create a product called the "iPad mini", Apple could just use their existing patent to litigate with. Trademarking "iPad mini" doesn't give them anything extra because their existing patent is inclusive of any other words. The motive appears to be that Apple was trying to put weight on the "mini" part and keep people from using that word.

What the USPTO is saying is that since Apple already has the trademark on "iPad", there is no need for them to trademark "iPad mini", because if a company tried to create a product called the "iPad mini", Apple could just use their existing patent to litigate with. Trademarking "iPad mini" doesn't give them anything extra because their existing patent is inclusive of any other words. The motive appears to be that Apple was trying to put weight on the "mini" part and keep people from using that word.

Where in the USPTO's write-up is that point made? (I scanned thru it once and must have missed it.)

Wait, there are people at the USPTO who actually review applications and read their contents before approving them? And, they actually reject things from time to time from big corporations?

Now that's news to me!

Abridged version of actual conversation with patent lawyer (still working at PTO, if anyone's wondering):

PTO cog: "So I let some dude from Texas patent the mathematical formula to determine the trajectory of a swing..."Another lawyer at our table: "Wait, what? You let him patent math? Why?"PTO cog: "Because I thought it would be funny."Me: "How are you not fired?"PTO cog: "What? It's not like it's going to stand up in court."Three other lawyers combined effort: "Yeah but it has already wasted hundreds of thousands of dollars, not to mention all the time the lawyers have to bill researching park swings. Park swings. This is something nobody should give a crap about."PTO cog: "But it was funny."Me: "You are literally the worst Republican I have ever met, and I've met Rick Perry."

You know, the last thing I really expected to see in this particular discussion was a bad political joke. Still, with Apple involved, I'm very impressed by the lack of nuclear downvoting.

I don't have any real problem with Apple registering names such as ipod and ipad as trade names. The words are new and refer to a particular vision of what those products may do.

I am much more worried when the aim is to create intellectual property from normal English words - esepcially where the product is not that novel. eg to claim ownership of round corners.

I don't think we should allow people to claim ownership over words that are in normal usage, such mini (Actually I would suggest that the iconic small car of the 1960's has a better claim on the word than Apple).

A trademark is not supposed to describe a product or service. It's supposed to identify the source of goods and services. Business owners and marketing types always want a descriptive name because it sells the product for you but such trademarks are difficult to obtain and even more difficult to enforce. The better marks are those that used made up names or trademarks that have a meaning that is not associated with their products and services (Apple for computers and Amazon for books come to mind as potential examples). Generic trademarks -- TMs like "burger" for a burger joint -- can't be registered as trademarks.

But descriptive trademarks can be registered as trademarks. A lot of times they are kicked off into the "supplemental register." This is a separate trademark registry than the principle register in which descriptive and other trademarks go to languish. They are accorded less protection than strong trademarks.

The saving grace of the descriptive trademark is so-called "acquired distinctiveness." That concept basically says "yeah, it's descriptive but we've marketed the hell out of it, we're the only ones that use it and now everyone associates that trademark with us and our product or service." Apple can certainly argue that.

Given Apple's history of trying to enforce arguably generic trademarks like "app store," my own personal opinion is that I hope the trademark office requires to expressly disclaim "mini" apart from how it appears together with "iPad Mini." Companies should compete on the quality of their products and services, not because they were the first ones to register descriptive terms. That's not the *point* of trademark law. The point is to prevent confusion among consumers -- not to prevent your competitors from being able to describe their own products and services.

A trademark is not supposed to describe a product or service. It's supposed to identify the source of goods and services. Business owners and marketing types always want a descriptive name because it sells the product for you but such trademarks are difficult to obtain and even more difficult to enforce. The better marks are those that used made up names or trademarks that have a meaning that is not associated with their products and services (Apple for computers and Amazon for books come to mind as potential examples). Generic trademarks -- TMs like "burger" for a burger joint -- can't be registered as trademarks.

But descriptive trademarks can be registered as trademarks. A lot of times they are kicked off into the "supplemental register." This is a separate trademark registry than the principle register in which descriptive and other trademarks go to languish. They are accorded less protection than strong trademarks.

The saving grace of the descriptive trademark is so-called "acquired distinctiveness." That concept basically says "yeah, it's descriptive but we've marketed the hell out of it, we're the only ones that use it and now everyone associates that trademark with us and our product or service." Apple can certainly argue that.

Given Apple's history of trying to enforce arguably generic trademarks like "app store," my own personal opinion is that I hope the trademark office requires to expressly disclaim "mini" apart from how it appears together with "iPad Mini." Companies should compete on the quality of their products and services, not because they were the first ones to register descriptive terms. That's not the *point* of trademark law. The point is to prevent confusion among consumers -- not to prevent your competitors from being able to describe their own products and services.

iPad and iPad mini should both be allowed to be trademarked. The trademark would be for the entire phrase "iPad mini" and not the word mini. That wouldn't prevent other companies from shamelessly riding on Apple's coat tails and using the word mini, like Samsung and a few other companies have recently done.

Besides, I would think that the Mini moniker would belong to the successors of the British Motor Corporation.

Why? Does it also make tablets? If they are not in the same business then no.

You should pay more attention to the world around you, Apple, Inc has in fact gone after companies using "apple" in their name and products that do not remotely relate to computers or software or electronic devices; the most famous of which is Apple Computer, Inc vs Apple Corps Ltd. And for that matter, Apple Corps didn't even bother to create a logo, they simply have a photo of an actual apple that is somehow trademarked.

So Yes ! BMW is within it's rights to moan about the use of "mini" in that same context.

You know, the last thing I really expected to see in this particular discussion was a bad political joke. Still, with Apple involved, I'm very impressed by the lack of nuclear downvoting.

The conversation got worse from there (Rick Perry being the worst Republican I have ever met is an obviously subjective opinion and could easily be influenced by my meeting someone I consider to be even worse -- the worst person I have ever met, by the way, is Slobodan Milosevic who is [still] a national hero in Serbia so yeah, it's subjective).

If you want to overhear some of the most politely, passionately (drunkenly), and convincingly-argued political and philosophical debates, the corner table in one of Alexandria's bars is probably the best place in the world to do it given the preponderance of locals who practice law or law enforcement on behalf of the federal government.

One mention of "Internet" - in the "Apple ignited the personal computer revolution" blurb at the bottom. "Downloading" is something you do to the iPod from the computer.

"iPod’s built-in FireWire® port lets you download an entire CD into iPod in under 10 seconds and 1,000 songs in less than 10 minutes—30 times faster than USB-based players."

Oh please. Everybody knew these things were made to play mp3s downloaded from Napster, Limewire and Suprnova. Was Apple supposed to promote using illegal mp3s with their device in PR materials? No, they promoted ripping as the legal use case until they got their licensing agreements in place to sell legal music downloads in 2003.

However, I'd really prefer that we not see Apple taking BMW to court for violating their trade mark with the "Mini" line of cars for offering integrated tablet-like features ( like a dashboard GPS or MP3 player ).

Personally, I'd love someone to sue the arse off of BMW. The Mini used to be a small car before BMW took over.

Imagine you're a deer. You're prancing along. You get thirsty. You spot a little brook. You put your little deer lips down to the cool clear water...bam! A fucking bullet rips off part of your head! Your brains are laying on the ground in little bloody pieces! Now, I ask ya, would you give a fuck what kind of linux distro the rifle that shot you was running?!

What on earth are you talking about!?!?!?!?! How does this relate to the USPTO and iPad minis?